When faced with an assertion of patent infringement, invalidating the patent at issue can be an effective and efficient way to resolve the dispute, especially in recent years through the USPTO’s Inter Partes Review (IPR).
However, patent invalidation usually must be conducted very quickly, with a limited timeframe and a heavy workload. If you are a practitioner on the defendant side, such as patent counsel or a patent attorney, you may find that this tight schedule is a huge drain on resources, and it can compromise the quality of your work and your chances of winning.
Fortunately, throughout the patent invalidation process, Patentcloud’s Quality Insights and Patent Search are there to assist you at every step, from 1.) initial file wrapper research to 2.) searching for and validating prior art references to 3.) developing invalidity arguments.
As a result, you can spend less time on your preparations but achieve the same quality of results. In fact, the time that is freed up by Patentcloud’s well-structured file wrapper data and advanced search capabilities can be utilized for additional preparation, giving you an even greater advantage in winning your case.
With Quality Insights, you gain a comprehensive overview of the entire situation at a glance, enabling you to make impactful decisions even more quickly.
Research File Wrapper
The patent invalidation process begins with file wrapper research, and in just one-click, Quality Insights delivers the challenges made to patentability during the prosecution and post-grant USPTO proceedings. This includes legal basis, challenged claims, and corresponding prior art references as indicators reflecting the current status as well as potential validity issues, including:
Novelty and non-obviousness issues (35 U.S.C. § 102, 103) with prior art references
Subject matter patent eligibility issues (35 U.S.C. § 101)
Indefiniteness of claim terms/scope issues (35 U.S.C. § 112)
Double patenting issues with corresponding terminal disclaimers (35 U.S.C. § 121 and 37 CFR § 1.321(b))
Quality Insights also provides full-text and image-file-wrapper documents in each table for further research.
Searching for and Validating
Prior Art References
Leveraging Prior Art in Quality Insights
For a fail-safe in your invalidity search, you can start from the missing elements of the considered references, while pursuing a single prior art reference that anticipates each claim limitation of each claim at issue. This ensures that at least the new references found can cure the missing elements of the considered references for presenting 35 § U.S.C. 103 grounds.
Utilizing Quality Insights and Patent Search in Your
While Quality Insights provides rejections and cited prior art references as a fail-safe for your invalidity search, Quality Insights also offers Semantic Prior Art, including relevant US, EP, WO, JP, KR, and CN patents, as an additional option for your invalidity search.
The Most Relevant Prior Art, Right Away
With one click, dig through layers of data to find the Top 50 prior art most relevant to your search, thanks to Patentcloud’s proprietary AI-powered Semantic Search algorithm.
Powerful Semantic Search for Invalidity Search
Patentcloud’s proprietary semantic algorithm is also used in Semantic Search, an advanced search feature in Patent Search Premium that enables users to set the claim terms they want to focus on as the search input and then, with one click, immediately obtain the top 300 relevant references.
In addition, the “More Like” button that appears with each patent in the results enables even greater precision by both updating and learning from the search results that are more relevant to both the original input and the selected patent.
Developing Invalidity Arguments
Quality Insights consolidates major documents in the file history (including rejections, remarks, claim amendments, and notices of allowance) and also provides searchable file wrappers. This enables cross-document keyword searching (currently rejections only, with other documents available later in 2018). With cross-document searchable file wrappers, you can quickly lock down paragraphs about specific issues (i.e., 35 U.S.C. § 101 or 112) or specific claim terms.
Original-image documents are also provided for your reference.
Searchable File Wrappers at the Speed of Now
Conduct a keyword search of file wrappers to identify prosecution history estoppel and claim scope disavowal issues quickly and easily, with Quality Insights.
With Quality Insights, you can even search additional claim terms within rejections.